Tips for Foreign Applicants to Utilize Prioritized Patent Examination

Prioritized patent examination is an effective way in shortening examination cycle, benefits patent applicants, and may contribute to economic development, and it is often called a “green path”. Since the State Intellectual Property Office of China (hereafter referred to as “SIPO”) issued an “Administrative Regulations of Prioritized Patent Examination” (hereafter referred to as “Regulations”) which took effect as of August 1, 2017, more and more domestic and foreign patent applicants are taking advantage of this prioritized patent examination system. Till the end of 2017, 29 patents entered the procedure of prioritized patent examination in front of the Reexamination Board of SIPO, and two design patents survived invalidations. Further, according to the statistics available at the website of Zhongguancun State Intellectual Property Model Park which represents Beijing Intellectual Property Office to preliminary review on the qualification for prioritized patent examination in Beijing area, 1,090 applications met the criteria and passed preliminary examination. And as far as learnt by the authors, some applications have been granted with a patent by utilizing this green path.

The majority of applications entering this system are domestic ones. Foreign applicants also possess the desire to make use of and pass this “green path”. In this article, we will introduce the recent update on prioritized patent examination and advise how foreign applicant may apply this system.

Which option(s) may be applicable by foreign applicants?

The Regulations prescribes that, if a Chinese patent application measures up one of the six options as follows, it would be qualified to request the prioritized examination:

It involves the national key development industries, including but not limited to energy conservation and environment protection, new generation of information technology, biotech, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing;

It involves the key development industries of which is encouraged by the provincial governments and prefecture-level city government;

It involves the fields of technologies relating to internet, big data, cloud computing and that technologies or products evolve rapidly;

The patent applicant or the applicant requesting re-examination gets everything ready to implement or has already started to implement, or has shown that a third party is implementing its invention-creation;

It should be the first filing in China and be claimed as the priority for the filing a patent application in another country or region on the same subject matter;

Other situations that has significant interests for China and the public, and therefore need to be examined as a priority.

For pure foreign applicants (which intends to mean that all the applicants are outside China), the most probable way for a foreign application is Option 5. Namely, for the first-filing Chinese patent applications, the foreign entities would feel free to request the prioritized examination, given that they have their creation-invention or designs firstly filed in China and claim the first-filing Chinese patent application to other countries or regions.

Options 1 and 3 are also possible for pure foreign applicants. If the invention belongs to the technical fields exemplified in Option 3, it is able to enter into prioritized examination. As for whether an invention belongs to national key development industries, it is suggested to check documents issued by the government, for instance, "the guidance catalogue of the strategic emerging industries and key products & service" issued by Chinese National Development and Reform Commission, which may be updated annually. Further, SIPO also issued a “Catalog of Industries Mainly Supported by Intellectual Property” (2018 version) on January 17, 2018, which may serve as a reference.

If the invention of a patent application has been implemented or is going to be implemented, or it has a risk of being infringed in the future, for instance, competitors are manufacturing the product covered by the application, option 4 may work. This may provide some rescue for inventions having prospects on the market.

On the other hand, a Chinese patent application jointly owned by both a Chinese and a foreign entity shall also enjoy the prioritized examination, so that all the sufficient documents for requesting the prioritized examination can be in good preparation by the Chinese co-owner. In practice, foreign applicants with Chinese subsidiaries or affiliates, given that their Chinese applications/patents belong to any of the applicable situations, may take this measure to accelerate the examination. In case of the joint applicants, the request for the prioritized examination shall be consented by all the co-applicants.

In addition, for an invalidation case, prioritized examination may be initiated: (1) if it involves a patent infringement case, the parties in action have already requested the local patent department to settle, or submit the case to the court, or request the Arbitration mediation organization for arbitration and mediation; or (2) the patent to be invalidated has significant interests for China and the public.

In recent years, foreign patentees are active in enforcing IP rights in China. A fast decision made by the Reexamination Board may favor the enforcement. As reported by the Reexamination Board, in the two invalidation cases which were examined via prioritized examination, decisions were issued in around two months from receipt of the request for prioritized examination. This is a good sign for patentees, especially when the patents are stable and of great value on the market.

Procedures and documents requested for filing a request for prioritized examination

The prerequisite for a Chinese patent application to be qualified for prioritized examination is that the application shall be a E-filing case, and the application has been published and entered into substantive examination. By taking different options, the documents requested may differ to some extent. Take an invention patent as an example.

No matter which option to adopt, one common document requested is a request form. Some basic information shall be included in the form, including application number, type of invention, name of the petitioner, contact person as well as the phone number and address of the contact person. Further, the ground for prioritized examination shall be indicated. If the above option 5 is applied and if the Chinese application is the first filing application of a PCT application, the PCT application number shall be laid out. If other options other than option 5 is chosen, the opinion of the recommendation authority shall be provided. The last but not the least, information on supporting materials, such as prior art references, shall be set forth in the request form.

Other common documents are prior art references relevant to the Chinese patent application. It is worth noting that the prior art references are used to facilitate the examiner to accelerate the examination. For Patent documents, only the documentation serial numbers and published date, indicating the relevant paragraph or picture numbers are sufficient; and for the non-patent documentation, such as magazines or books, it is suggested providing the full pages or the relevant pages.

Besides the request form, other supporting materials would be requested.

For instance, other relevant supporting documents, which refers to the documents that would prove that the case falls into one of the situations described in the Regulations. Some examples are listed in the form below.

Option Number

Document

Purpose

1 or 3

an introduction made by the applicant

explaining that the technologies in the Chinese patent applications belongs to the key industries, the technologies or the products regulated in Rule 3

4

the product photos, the product catalog, the product manual etc;

the sale contract, the supply agreement, the purchase invoices and other documents

proving the applicant has already prepared to implement the Chinese patent case;

proving the trade and sale of the products, in order to prove that the applicant has already started to implement the Chinese patent case or there would be potential infringement upon the Chinese patent case

5

the Official Filing Receipts of other national or regional filings

proving the first-filing Chinese patent case is claimed as the priority for other national or regional filings.

In case that the first-filing Chinese patent applications is claimed as the priority for the PCT application, the PCT application number in the Requesting forms is sufficient.

Timelines for prioritized examination

Bearing the critical timelines in mind may help better utilization of the system and monitor the progress. Some important timelines have been listed in the table below for reference (only for patent (application)).

Substantive Examination

Reexamination or Invalidation

Acceptance*

about 3 – 5 working days

No specific time limit; as soon as possible

First Office Action

within 45 days from date of Official Receipt of the Request for prioritized examination

-

Time for Responding to a Notification

Within 2 months, without mailing period

same as an ordinary application/patent

Duration#

within one year

within 7 months (for reexamination)

*Acceptance: time from receiving the Request for prioritized examination as well as the documents in support to permit or reject prioritized examination;

#Duration: time from the receipt of a request for prioritized examination to make a final decision

In conclusion, the prioritized examination is an effective way for foreign applicants to obtain a patent in a significantly shortened period, and also beneficial for patent owners who desires to enforce patents in an expedited manner.